DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
This action is in response to the amendments filed on 8/27/26 wherein the examiner acknowledges that claims 1 & 8 have been amended, no additional claims have been added and claims 5 & 9 remain canceled. Consequently, claims 1-4, 6-8 & 10 are currently pending.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 6-8 & 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Amendments to claim 1 recites "implemented by a computer comprising a lottery system”, however the specification fails to provide support for the new limitations. Additionally, new limitations throughout claim 1, adds “…into the lottery system", however the specification fails to provide support for the above limitation as well. Furthermore, amended claim 1, also recites "a first number of participants from the sorted results as the winners..", “generate a lottery result”; however the specification does not provide support for the above limitations as well. Thus, claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, had possession of the claimed invention.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-4, 6-8 & 10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S.___(2014).
Claims 1-4, 6-8 & 10 are directed to mathematical relationships/formulas. As such, the claims are directed to statutory subject matter under Step 1 of the Alice flowchart as directed to a judicial exception (i.e. an abstract idea).
Addressing the claims under Step 2A, the claims are held to be directed to concepts similar to those found to be abstract, either as outlined in the 2014 lEG/July 2015 Update to Subject matter eligibility, or, as compared to certain decisions rendered by the courts. The claims describe conducting a lottery based on Merkle tree derived formula and sorting manner. Addition of the limitations that narrow the idea merely aide in the description of the abstract idea and therefore do not render the claims any less abstract.
The claims at issue are directed to mathematical algorithms (i.e. Merkle tree formulation and similar sorting manner). Claim 1 states, “wherein the step 4 further comprises:
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In particular, the courts have found mathematical algorithms to be abstract ideas (i.e. a mathematical procedure for converting one form of numerical representation to another in Benson, or an algorithm for calculation parameters indication an abnormal condition in Grams). The courts have found that analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category (See Electric Power Group, LLC v. Alstom S.A., (Fed. Cir. 2015) citing e.g., TLI Commc'ns, 823 F.3d at 613; Digitech, 758 F.3d at 1351; Bancorp Servs., L.L.C. v.Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011); SiRFTech., Inc. v. Int'ITrade Comm'n, 601 F.3d 1319,1333 (Fed. Cir. 2010); see also Mayo, 132 S. Ct. at 1301; Parker v. Flook, 437 U.S. 584, 589-90 (1978); Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
Step 2A, Prong Two: Claims 1-4, 6-8 & 10 does not contain additional patentable elements that integrate the abstract idea exception into a practical application because the additional elements are mere instructions to apply the abstract idea exceptions; MPEP § 2106.05(f). (2) generally link the judicial exception to a particular technological environment, i.e. mathematical formulas; MPEP § 2106.05(h); (3) are insignificant extra solution activity; MPEP § 2106.05(g). The additional elements are limited to generic computer components performing mathematical algorithms/formula, as stated in claim 1, including “step 1: inputting a number of winners in a lottery and participants in the lottery into the lottery system; step 2: submitting personal data of each of the participants to the lottery system; step 3: at beginning of the lottery, clicking and confirming a random time stamp by the participant; step 4: recording the personal data and the random timestamp of each participant on the lottery system, constructing a Merkle tree with an SM3 algorithm by the processor, taking a root of the Merkle tree as a random seed, and disclosing the random seed; step 5: taking the random seed as an input, and iteratively running the SM3 algorithm to obtain a random string of the participant; step 6: sorting all of the random strings in a descending manner to obtain a sorted result; step 7: selecting a first number of participants from the sorted result as the winners in the lottery according to the number of winners to generate a lottery result, and ending the lottery; step 8: submitting the personal data and the random timestamp to the lottery system, and verifying, by the lottery system a legality of the random seed with a membership certification function of the Merkle tree; and step 9: reproducing and verifying the lottery result by iteratively running the SM3 algorithm on the legal random seed when the random seed is verified as legal”. As indicated in the rejection above, the claim language discloses elements which are limited to generic computer components performing mathematical algorithms/formula. The additional elements in the preamble do nothing to integrate the abstract idea exception into a practical application.
Therefore, while it is understood that the claims in the current application are not verbatim recitations of the guidelines or case law, the detailed analysis provided above shows how the current claim limitations at issue closely parallel the concepts provided by the guidelines and the precedential case law, and are therefore considered to be directed to an abstract idea (Step 2A: YES).
Under Step 2B, the examiner acknowledges the additional limitations (i.e. an interfaces or websites, interactions with websites, and various forms of software for presenting information to users). However, under Step 2B, no element or combination of elements is sufficiently presented to ensure the claim as a whole amounts to significantly more that the abstract idea itself. For example, the components generically claimed to enable calculation of Merkle tree for management of the lottery by performing the basic functions of: (i) receiving, processing, and storing data, and (ii) receiving or transmitting data over a network, e.g., using the Internet to gather data. The courts have recognized these functions to be well-understood, routine, and conventional functions when claimed in a merely generic manner. Particularly, In re TLI Communications LLC (Fed Cir, 2016) held that adding hardware that performs “‘well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible. As such, the recitation of claims 1-4, 6-8 & 10 amounts to mere mathematical formula to derive lottery game.
Additionally, these limitations are merely recitations of mathematical formula to enable calculation of Merkle tree for management of the lottery, amount to nothing more than implementing the abstract idea with routine, conventional activity specified at a high level of generality in a particular technological environment. When viewed either as individual limitations or as an ordered combination, the claims as a whole do not add significantly more to the abstract idea of mathematical formula to enable calculation of Merkle tree.
Ultimately, the claimed machine(s) function solely as an obvious mechanism to achieve the claimed result, failing to impart a meaningful limit on the claim scope [see SiRF Tech., Inc. v. ITC (Fed. Cir. 2010)]. The claims at issue here do not rise to overriding the routine and conventional sequence of events ordinarily performed by the computer, nor do they set forth with any specificity the interactions of the machine itself. Conversely, the claims are only specific in using mathematical formula to enable calculation of Merkle tree, and are silent as to any detail or property that would transform the otherwise generic machinery into a specialized or special purpose machine.
Thus, under Step 2B, the Examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself (Step 2B: NO).
Dependent claims when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to an abstract idea. The claims provide minimal technical structure or components for further consideration either individually or as ordered combinations with the independent claims. As such, additional recited limitations in the dependent claims only refine the identified abstract idea further. Further refinement of an abstract idea does not convert an abstract idea into something concrete.
Response to Arguments
Applicant's arguments filed 8/27/2026 have been fully considered but they are not persuasive.
The examiner would like to reiterate that pre-Alice, it was the Office's position that limiting the claims to a computer-implemented embodiment was enough to overcome this problem and confer patent-eligibility. With the Alice decision, this is no longer the case. Implementing an abstract idea on a generic computer will not confer patent-eligibility. Since Applicant's invention is the implementation of certain methods of organizing human activities using mathematical formula, it cannot be patent-eligible.
Regarding the applicant’s arguments that the claimed Merkle-tree and SM3 operations are not mathematical operations in isolation because they are functionally related and collectively provide a verifiable lottery mechanism. However, the claimed order remains directed to mathematical concepts, including calculating hash values, generating a Merkle-tree root, verifying the root through additional hash calculations, generating participant-specific random values, sorting those values, and comparing the resulting ordering. The fact that these mathematical operations are arranged in a particular sequence or applied to a lottery does not, by itself, integrate the exception into a practical application. See MPEP § 2106.04(a)(2).
Applicant's reliance on the particular Merkle-tree architecture is also unpersuasive. The claim recital of generation and verification of the Merkle-tree root merely perform sequential mathematical hash operations on participant data. The claim does not recite an improvement to the computer, hashing technology, or Merkle-tree technology itself. Rather, the claimed computer performs the mathematical operations for their intended purpose of verifying lottery data. Likewise, successively applying SM3 to the verified seed and sorting the resulting values merely reproduces and verifies a previously calculated mathematical result; comparing the reproduced ordering with the previously disclosed ordering does not transform the mathematical calculations into a technological improvement. A mathematical formula does not become patent-eligible merely by being applied in a specific field or manner.
Applicant's argument that the claimed operations establish a "verifiable data relationship" between participant information, the seed, and the lottery result is also not-persuasive. The claim mathematically derives and verifies relationships among data elements. The claimed computer is used as a tool to perform these calculations, without reciting a particular improvement to computer functionality or another technology (See Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344.)
Accordingly, the 35 USC 101 rejection of claims 1-4, 6-8 &10 is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUNIT PANDYA whose telephone number is (571)272-2823. The examiner can normally be reached M-F 9:30-6:30PM.
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/SUNIT PANDYA/ Primary Examiner, Art Unit 3715
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